Appeal No. 1999-1157
Application No. 08/482,321
As appellants’ argue (Brief, page 9):
[T]he ‘process’ of Cohen et al referenced by the Examiner is
heterologous gene expression under the control of the lac promoter.
The essential issue with regard to the outstanding rejections,
therefore, is whether it would have been obvious to one of ordinary
skill in the art on 24 March 1980 to substitute the attenuator- and trpE
ribosome binding site-deleted trp promoter for the lac promoter
actually employed in the ‘process’ of Cohen et al.
Much of appellants’, as well as the examiner’s, arguments are directed to an
increase in expression resulting from the use of the trp promoter mutants relative to
the lac promoter. However, we note that nothing in the claims require an increase in
expression. The examiner argues (Answer, page 8) that it would have been obvious
to substitute the lac promoter with the trp promoter as taught by Miozzari. We note
that, where the prior art recognizes two components to be equivalent, an express
suggestion to substitute one for another need not be present in order to render such
substitution obvious. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA
1982). Therefore, it appears that the examiner has made out a plausible prima
facie case of obviousness.
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